“Change is the only constant” and mid-way through 2016, we have witnessed some drastic changes brought about in the IP management and regime in India, starting with the bulk abandonment of 1,66,771 trademark applications in March 2016, to the stay order by the Delhi High Court, to the default notice issued against 9000 trademark applications for not filing reply to examination reports, and finally to the latest initiative of issuing automated Registration Certificates. Looking back at the series of such events that unfolded since March ’16, one can’t help but notice the rather laudable efforts by the Trademarks Office to get rid of the monumental back log and get the system up and running for good.

Kudos to Mrs. Nirmala Sitharaman (Minister of State for Commerce and Industry, and for Finance and Corporate Affairs) for having taken up such initiatives, which were spearheaded by Mr. O.P. Gupta (Controller General of Patents, Designs & Trade Marks).

From a situation where letters to the Controller went unanswered despite reminders, the IP office is now taking in suggestions and solving issues by opening up communication channels through social media

Considering the initiatives by the Government, here are a few suggestions which if implemented could possibly ensure a more expeditious and effective system for the registration of trademarks in India:

Suggestion: Removal of registrations not renewed:

Problem: There are a multitude of trademarks on the Register at present where the marks have crossed their dates of validity, O3 notices [renewal notices] have been dispatched to the applicant and yet no renewal requests have been filed. Marks which should have been removed from the register decades ago, are still very much on the register.

While the mere existence of the mark on the Register, shouldn’t pose a problem, there have been several instances during examination where a mark has been objected on only relative grounds citing similar marks, and on perusal it was found that the cited similar marks no longer exist in the Register. Just as the Trademarks Office generated bulk abandonment orders and default notices for cases where reply to examination report were not filed, similarly, they could trace out all marks which has expired their validity dates and no renewals have been filed.

For all cases wherein an O3 notice has been dispatched and no renewal have been filed, the Trademarks Office could abandon such marks with immediate effect.

Other cases wherein O3 notices have not yet been dispatched, O3 notices could be dispatched with a deadline of 30 days for filing the renewals and accordingly abandon the non-renewed marks.

Unlike issuance and reply to an examination report, keeping a track of the renewal is a duty of the Applicants/Agents and a vigilant proprietor will renew his trademark rights on time.

Suggestion: Training of Examiners:

Problem: Things have changed a great deal from 2012 when in response to an RTI that we filed, we were informed that there were only 17 examiners on contract, to the numerous appointments over the last few months. While the bandwidth has certainly increased, in a rush to expedite examinations, the IP office has a dropped the ball when it comes to their training. Rookie examiners have been raising objections which could be avoided with a little bit of training and awareness. Some of the issues with the current examination have been mentioned below:

  • Removed/abandoned/expired applications/registrations:

The examiners sometimes raise a single objection citing similarity with an existing mark which on further review was either abandoned, removed or not renewed. By citing such marks that no longer exist on the Register, there is an unwanted burden on the Applicant as his trademark prosecution is stalled for quite some time [I’m talking years not months]. If only the Examiners could verify the current status of the marks they cite in the Examination Report, many marks would go through to be advertised directly without any objection. Furthermore, it is the Applicant would also be saved from spending on expenses incurred for filing a reply to the examination report. It would also reduce the burden of the Registrars who spend considerable time in processing such replies.

  • Applications belonging to the same Applicant:

Example: There have been several instances wherein a mark would be objected on only relative grounds citing similar marks, which belong to the same Applicant as that of the objected mark. A simple verification would have avoided a great deal of time.

Possible Action: Before issuing or generating an examination report, in cases of relative grounds objection, the Examiner should check on the current status of each similar mark in the search report and on that basis should not cite marks that have not been renewed, or are abandoned or removed. Implementation of suggestion no.1 (cited above) would come in handy for the Examiners to abstain from citing abandoned and non-renewed marks. They could also simultaneously take action on such files and remove them from the Register so that such marks do not come up in search reports. With respect to citing the same Applicant’s marks, the Examiner could avoid that by cross-checking the Applicant details.

Suggestion: Processing new applications without processing earlier applications:

Example: While the IP office has stepped on the pedal with regard to examination and processing of new applications, a lot of the old files which were filed in 2010 and earlier have been banished to some dusty old corner of the office. In a bid to streamline the processing of files, the new ones are going through in a matter of months, it seems like no one is tending to the old ones.

Possible Action:

The Trademarks Office should also consider processing the older applications as it would be unfair for the rights of proprietors of earlier applications when it comes to opposition and cancellation proceeding where subsequent marks are registered earlier. Moreover, trademarks filed early would miss out on the rights of prior registration.

A promising road ahead

Amidst the on-going series of events we express our fullest acknowledgment and appreciation for the initiatives taken by the Trademarks Office. Furthermore, we believe these suggestions would assist the Trademarks Office to establish a well-balanced and efficient IP registration system in the near future.

Readers’ Suggestions

While these were some of the issues that we felt were urgent, if there’s something in the system now that you feel is broken, or have suggestions that you think are worth implementing please comment in the section below. I’d love to hear from you.

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